Ex Parte Smith

Board of Patent Appeals and Interferences

Jul 17, 2002

08678409 (B.P.A.I. Jul. 17, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RANDALL SMITH
____________
Appeal No. 2000-0358
Application No. 08/678,409
____________
ON BRIEF
____________
Before FLEMING, LALL, and GROSS, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-21, all the claims pending in the instant application.
The invention relates to a computer system and computer-
implemented method for associating access rights with a virtual
input device, such as a mouse cursor. The system (200) includes
a display device (205), a virtual input device (314), and a
mechanism configured to cause a new access right to be acquired
by the virtual input device. See Appellant's specification on
Appeal No. 2000-0358
Application No. 08/678,409
page 6, line 19, page 9, lines 7-11 and 20-24, page 12, lines 17-
21 and associated figures 2A and 5. The method includes the step
of selecting a new access right representing a first object (e.g.
CAP 1), the new access right representing a predefined right to
interact with another object, and acquiring the new access right
by the virtual input device by causing the first object to
interact with a second object (e.g. 310) representing access
rights of the virtual input device. See Appellant's
specification on page 9, lines 7-11 and 20-23, page 11, lines 2-3
and 8-11 and associated figure 5. The invention also relates to
a machine readable medium (208), which causes a computer system
to perform the steps of the above computer-implemented method.
See Appellant's specification on page 7, lines 12-13, page 8,
lines 5-6 and 18-20 and associated figure 2A.
Independent claims 1, 8, and 15 present in the application
are reproduced as follows:
1. A computer-implemented method for associating access rights
with a virtual input device, said computer-implemented method
comprising the steps of:
selecting a new access right represented by a first object,
said new access right representing a predefined right to interact
with another object; and
acquiring said new access right by said virtual input device
by causing the first object to interact with a second object
representing access rights of said virtual input device.
3
2
Appeal No. 2000-0358
Application No. 08/678,409
8. A machine readable medium having stored thereon data
representing sequences of instructions, which when executed by a
computer system, cause said computer system to perform the steps
of:
selecting a new access right represented by a first object,
said new access right representing a predefined right to interact
with another object; and
acquiring said new access right by said virtual input device
by causing the first object to interact with a second object that
represents current access rights of said virtual input device.
15. A computer system for associating access rights with a
virtual input device, said computer system comprising:
a display device;
a virtual input device;
a mechanism configured to cause a new access right to be
acquired by said virtual input device by causing a first object
representing a new access right to interact with a second object
that represents current access rights of said virtual input
device, said first and second objects being displayable on said
display device.
References
The references relied on by the Examiner are as follows:
Bly et al. (Bly) 5,008,853 Apr. 16, 1991
Hullot 5,163,130 Nov. 10, 1992
Rejections at Issue
Claims 1-2, 4-6, 8-9, 11-13, 15-16 and 18-20 stand rejected
under 35 U.S.C. § 102 as being anticipated by Bly. Claims 3, 7,
1 Appellant filed an appeal brief on July 9, 1999, Paper No.
20. In response to the appeal brief, the Examiner filed an
Examiner's Answer, Paper No. 21, mailed August 2, 1999.
4
Appeal No. 2000-0358
Application No. 08/678,409
10, 14, 17 and 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bly and Hullot.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the Brief1 and the Answer for the
respective details thereof.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner's rejections and the arguments of Appellant
and Examiner, for the reasons stated infra, we reverse the
Examiner's rejection of claims 1-2, 4-6, 8-9, 11-13, 15-16 and
18-20 under 35 U.S.C. § 102, and we reverse the Examiner's
rejection of claims 3, 7, 10, 14, 17, and 21 under 35 U.S.C.
§ 103.
We first will address the rejection of claims 1-2, 4-6, 8-9,
11-13, 15-16 and 18-20 under 35 U.S.C. § 102. It is axiomatic
that anticipation of a claim under § 102 can be found only if the
prior art reference discloses every element of the claim. See In
re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986)
5
Appeal No. 2000-0358
Application No. 08/678,409
and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is the
claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998). In addition, claims are to be interpreted
as the terms reasonably allow. In re Zletz, 893 F.2d 319, 321,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Claim 1 recites the step of "acquiring said new access right
by said virtual input device by causing the first object to
interact with a second object representing access rights of said
virtual input device." Taking a reasonably broad interpretation,
claim 1 requires the step of acquiring a new access right using a
virtual input device to cause a first object to interact with a
second object, the second object representing the access rights
of the virtual input device.
We also note that claim 8 includes the limitation,
"[a] machine readable medium having stored thereon data
representing sequences of instructions, which when
executed by a computer system, cause the computer
system to perform the step of . . . acquiring said new
access right by said virtual input device by causing
the first object to interact with a second object
representing access rights of said virtual input
devices"
6
Appeal No. 2000-0358
Application No. 08/678,409
and claim 15 includes the limitation, "said computer system
comprising . . . a mechanism configured to cause a new access
right to be acquired by said virtual input device by causing the
first object to interact with a second object representing access
rights of said virtual input devices." Reading these claims as
broadly as reasonably allowed, claim 8 requires the data
representing sequences of instructions of a machine readable
medium executed on a computer system to cause the system to
perform the step of acquiring said new access right by said
virtual input device by causing the first object to interact with
a second object representing access rights of said virtual input
device, and claim 15 requires a mechanism of a computer system to
be capable of or configured to cause a new access right to be
acquired by said virtual input device by causing the first object
to interact with a second object representing access rights of
said virtual input device.
Appellant argues that Bly et al. (Bly) does not disclose the
step of the virtual input device acquiring a new access right by
causing a first object to interact with a second object
representing access rights of the virtual input device. Appeal
Brief, page 5, lines 23-25. More specifically, Appellant states
that if the record is the recited second object, the record does
7
Appeal No. 2000-0358
Application No. 08/678,409
not represent access rights of the virtual input device. Appeal
Brief, page 5, line 25 through page 6, line 2. Rather, the
record is a data entry unit. Additionally, Appellant argues that
if the database system is the second object recited in claim 1,
then the acquisition of a new access right is not caused by an
interaction between the first object and the second object as
recited in claim 1. Appeal Brief, page 6, lines 11-17.
Appellant states that the database manager of Bly locks the
record automatically as disclosed in column 18, lines 4-12,
without interaction with the first object (lock icon 92).
The Examiner argues that the breadth of claim 1 anticipates
Bly. The Examiner states that Bly
"discloses selecting a new access right represented by
a first object 92, new access right representing a
predefined right to interact with another object 57
(col 16, lines 2-60) and associating new access right
with virtual input device by causing the first object
to interact with a second object representing virtual
input device (see col 17, lines 16-68)." Examiner's
Answer, page 3, lines 12-16.
Upon a careful review of Bly, we fail to find a disclosure
of a virtual input device acquiring a new access right by causing
a first object to interact with a second object representing
access rights of the virtual input object as recited in claim 1.
8
Appeal No. 2000-0358
Application No. 08/678,409
We first note that the Examiner has misinterpreted the scope of
claim 1 by stating that claim 1 recites, "acquiring the new
access right by causing the first object to interact with a
second object representing virtual input device." Examiner's
Answer, page 5, lines 15-16. In actuality, claim 1 recites
"acquiring said new access right by said virtual input device by
causing the first object to interact with a second object
representing access rights of said virtual input device"
(emphasis added).
Second as Appellant points out, Bly discloses in column 17,
lines 3-15 and column 18, lines 7-12 that the acquisition of the
second form of access rights or a new access right that allows
the user to make changes to an entry is obtained through a
database service. Since claim 1 requires that the acquisition
be done by a virtual input device, we find that Bly does not
disclose the step of acquiring a new access right using a virtual
input device.
In addition, there is no discussion in column 17, lines 16-
68 of Bly about interacting the first object (lock icon 92) with
a second object to acquire the new access right. While citing to
9
Appeal No. 2000-0358
Application No. 08/678,409
column 17, lines 16-68, the Examiner has provided little guidance
regarding what the second object is. According to column 17,
lines 57-59 of Bly when an entry is made, this action prevents
other users from also entering the record. Also, a further
discussion of the locking function is found in column 30, lines
33-38 of Bly. This portion describes the lock icon 92 appearing
when a user selects the "lock" command 47. Thus, some form of
interaction between objects 47 and 92 exists. However, this
interaction does not cause an acquisition of a new access right.
Rather, this interaction prevents others from concurrently
modifying an entry. Also, if the "lock" command were viewed as
the second object, the command represents an "accelerator" to
lock an entry as disclosed in column 30, lines 42-43 and not an
access right of the virtual input device as required by claim 1.
As such, we concur with the Appellant that Bly does not
disclose the virtual input device acquiring a new access right by
causing a first object to interact with a second object
representing access rights of the virtual input object.
Appellant also argues that the Examiner's elected first
object (lock icon 92) does not represent a new access right as
required by claim 1. Appeal Brief, page 6, lines 18-22. "[T]he
10
Appeal No. 2000-0358
Application No. 08/678,409
locked icon 92 is an annunciator to the status of a shared book
in the database." Appeal Brief, page 6, line 26 through page 7,
line 1.
We agree with Appellant that the Examiner has not
demonstrated that the lock icon 92 meets the limitations found in
claim 1 of "selecting a new access right represented by a first
object." Bly describes in column 30, lines 38-41 that the lock
icon is an indicator that certain entries are locked.
Furthermore, there is no discussion in column 30 or in column 16,
lines 2-60 that the lock icon 92 represents a new access right.
At most, the lock icon symbolizes that other users will be denied
access rights to the locked entries.
Thus, we fail to find that Bly discloses the step of
selecting a new access right represented by a first object as
recited in claim 1.
We note that separate arguments have not been presented with
regards to independent claims 8 and 15. As such, they stand or
fall with the arguments presented with regards to claim 1. Claim
8 recites,
data representing sequences of instructions, which when
executed by a computer system, cause the computer
system to perform the step of . . . acquiring said new
access right by said virtual input device by causing
11
Appeal No. 2000-0358
Application No. 08/678,409
the first object to interact with a second object
representing access rights of said virtual input
devices,
and claim 15 recites the limitation, "said computer system
comprising . . . a mechanism configured to cause a new access
right to be acquired by said virtual input device by causing the
first object to interact with a second object representing access
rights of said virtual input devices." Since both claims 8 and
15 include limitations addressing acquiring a new access right by
the virtual input device by causing the first object to interact
with a second object representing access rights of the virtual
input device, we also find that Bly does not disclose the
limitations of claims 8 and 15.
Therefore, we find that Bly fails to teach all of the
limitations of claims 1, 8, or 15, and thus claims 1-2, 4-6, 8-9,
11-13, 15-16 & 18-20 are not anticipated by Bly.
We now turn to the rejection of claims 3, 7, 10, 14, 17 and
21 under 35 U.S.C. § 103. The Examiner has not relied on the
secondary reference, Hullot, to teach or suggest the elements in
claims 1, 8 or 15 missing from Bly. As such, we also cannot
sustain the rejections made under 35 U.S.C. § 103.
Therefore, we find that Bly does not disclose Appellant's
claim limitation of "acquiring said new access right by said
12
Appeal No. 2000-0358
Application No. 08/678,409
virtual input device by causing the first object to interact with
a second object representing access rights of said virtual input
devices" recited in claim 1, the limitation of "data representing
sequences of instructions, which when executed by a computer
system, cause the computer system to perform the step of . . .
acquiring said new access right by said virtual input device by
causing the first object to interact with a second object
representing access rights of said virtual input devices" recited
in claim 8 or the limitation, "said computer system comprising
. . . a mechanism configured to cause a new access right to be
acquired by said virtual input device by causing the first object
to interact with a second object representing access rights of
said virtual input devices" recited in claim 15. In view of the
foregoing, we conclude that the Examiner has failed to establish
a prima facie case of obviousness.
13
Appeal No. 2000-0358
Application No. 08/678,409
In summary we reverse the Examiner's rejection of claims 1
under 35 U.S.C. § 102 and claims under 35 U.S.C. § 103(a) as
unpatentable over Bly in view of Hullot.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
MRF/LBG
Appeal No. 2000-0358
Application No. 08/678,409
BLAKELY, SOKOLOFF, TAYLOR AND ZAFMAN
12400 WILSHIRE BOULEVARD SEVENTH FLOOR
LOS ANGELES, CA 90025
Lesley
Appeal No. 2000-0358
Application No. 08/678,409
APJ FLEMING
APJ GROSS
APJ LALL
DECISION: REVERSED

Prepared: October 2, 2003
Draft Final
3 MEM. CONF. Y N
OB/HD GAU 2700
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT